October 21, 2019

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State Sovereignty 101: State Universities Not Immune to IPR Proceedings

School may be out for the summer, but public colleges and universities would do well to spend their break shoring up strategies and defenses against potential inter partes review (“IPR”) proceedings. Last week the Federal Circuit ruled that states and state agencies (including state affiliated colleges and universities) may not rely on a sovereign immunity defense in a patent IPR proceeding. This decision means that challenges against University of Minnesota patents will proceed at the Patent Trial and Appeals Board (“PTAB”), and that other state affiliated educational institutions also may be subject to such proceedings.

The June 14 decision could open the floodgates to other IPR challenges against patents held by public colleges, universities, and other state entities. State colleges and universities should plan on adjusting various intellectual property clauses of licenses, sponsored research, and other technology transfer and funding agreements in efforts to mitigate the risks associated with an IPR challenge. These institutions also should carefully evaluate and plan for this risk in any assertion or even licensing efforts where a risk of an IPR may arise. Further, public colleges and universities should develop internal strategic plans to reduce the risk of an IPR occurring and to have various strategic approaches to IPR situations should an IPR challenge, or even a threat of an IPR challenge, occur in the future.

In the dispute, Ericsson challenged multiple patents held by the University of Minnesota relating to wireless technologies. The University of Minnesota also faces separate patent challenges to a computer hardware patent and a university patent related to hepatitis C medication.

The Federal Circuit held that for purposes of IPRs, state sovereign immunity is essentially the same as tribal sovereign immunity held by Native American tribes. In 2018, the Federal Circuit ruled that Saint Regis Mohawk could not employ tribal sovereign immunity in a dispute before the PTAB.

“[An] IPR represents the sovereign’s reconsideration of the initial patent grant, and the differences between state and tribal sovereign immunity do not warrant a different result than Saint Regis. We therefore conclude that state sovereign immunity does not apply to IPR proceedings,” the Court wrote in the June 14 ruling. Regents of the Univ. of Minn. V. LSI Corp., No. 2018-1559, 27 (Fed. Cir. Jun. 14, 2019).

The Federal Circuit also wrote that IPR proceedings differ substantively from typical civil litigation, to which sovereign immunity would normally apply unless waived. Instead, the Court writes that IPR proceedings “are essentially agency reconsideration of a prior patent grant.”

In other words, IPRs are more akin to a government agency enforcement action than a civil suit. The PTAB’s primary focus is determining whether a previous patent grant was made in error, rather than resolving a dispute between two adversarial parties. The PTAB may issue a ruling even if the petitioner or patent owner decides not to participate, unlike in civil litigation.

A petition for certiorari was filed in Saint Regis but was denied by the U.S. Supreme Court, which effectively allowed the Federal Circuit decision to stand. It remains to be seen if the University of Minnesota will appeal this ruling or if certiorari would be granted, but if allowed to stand, it is fair to anticipate a significant increase in patent IPR challenges to public colleges and universities as well as to other state agencies.

Click here to read the full opinion from the US Court of Appeals for the Federal Circuit.

Copyright © 2019 Womble Bond Dickinson (US) LLP All Rights Reserved.

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About this Author

Mark Shelly, Of Counsel, Houston, WBD, IP Law, Patent Law
Of Counsel

Leveraging his broad technical and legal background, Dr. Mark Shelley assists clients in identifying and strategically protecting their intellectual property and technology-based assets, with particular emphasis on energy-related transactions and the prosecution and litigation of patents and trademarks.

Mark's practice also includes work in M&A transactions amongst technology-focused companies, drafting complex agreements, preparing patentability, non-infringement and freedom to operate opinions, and counseling clients with respect to a wide range of intellectual property issues...

346.998.7816
Kristin Lamb, Associate, Houston, WBD, IP Law, Patent Law
Associate

Large companies, startups, universities, and solo inventors look to Kristin Lamb to assist in establishing, defending, and monetizing valuable intellectual property. 

Kristin focuses on assisting clients in protecting their intellectual property rights in the areas of patents, trademarks, and copyrights, advising on strategies for pursuing protection, filing domestic and foreign applications, and prosecuting applications to allowance. In addition, Kristin guides clients in intellectual property litigation, as well as IP licensing. 

Kristin is well-versed in a variety of technology areas, with a particular emphasis on automation, communications, and medical devices. Kristin spends the majority of her time immersed in natural resource technologies, which allows her to apply her background in biochemistry. She brings a passion for exploring and protecting new technologies to help clients attain comprehensive protection.

She is experienced in each stage of the patent prosecution process, from preparing and prosecuting domestic and foreign patent applications to providing counsel and opinions on matters of invalidity and non-infringement, freedom to operate, and product design. Kristin regularly makes use of the United States Patent and Trademark Office's expedited examination policies and strategic examiner interviews to efficiently move applications to allowance.

Her litigation practice includes defending a range of technologies in patent disputes in the Eastern District of Texas, the most active federal patent court in the country, among other jurisdictions. 

Kristin honed her legal writing skills as a note and comment editor for the Journal of Gender, Social Policy & the Law review at American University.

346.998.7843
Elizabeth LeVan Riley, Womble Carlyle Law Firm, Raleigh, Higher Education Attorney

Liz Riley has been with Womble Carlyle since 1986. She concentrates her practice in school and higher education law. Her practice evolved as a business litigator with a passion for working with school leaders on the many issues facing schools, colleges and universities as they strive to deal with legal compliance and shifting campus demands in the ever-evolving world of education. Liz works with a variety of public traditional and charter schools, private schools, colleges, universities, foundations, education management organizations (EMOs) and charter management...

919-755-2114
Jeffrey S. Whittle Partner Womble Houston Corporate Law, IP Law, Patent Law,
Partner

Jeffrey Whittle provides over two decades of legal experience to clients in the energy and high tech industries. He advises on strategic and complex technology transactions, licensing, patent protection, portfolio analysis, and other contentious and transactional intellectual property matters including inter partes reexaminations, post-grant reviews, and derivation proceedings, among other disputed cases. Jeffrey leads Womble Bond Dickinson’s International IP Energy Group and serves as Managing Partner of the firm’s Houston office.

Jeffrey has been recognized by Chambers USA in the...

346.998.7859